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Significant Amendments Introduced to Kazakhstan Trademark Law

Significant changes have been recently introduced to the Law of the Republic of Kazakhstan “On Trademarks, Service Marks and Appellations of Origin”. The amendments came into force on April 20.

The amended law now establishes the regional principle of exhaustion of trademark rights, as it corresponds with the goals of the Eurasian Economic Union (EAEU) member states.

Among other changes, Article 4 of the amended trademark law provides for the registration of a trademark in the name of both legal entities and natural persons. Previously, a natural person had to be registered as an entrepreneur in order to be entitled to register a trademark.

Article 4 now forbids registration of a trademark in the name of multiple applicants, regardless of whether these are legal entities or natural persons.

Under the same Article, registration certificates will no longer be issued. The registration will be recorded in the Kazakh State Trademark Register and confirmed by an extract from the register.

The list of absolute grounds for refusal now includes a new provision that precludes the registration of International Nonproprietary Names for pharmaceutical substances as trademarks. Also, the provision that previously prohibited the registration of “trademarks that are directly or associatively connected with goods and/or services for which they are used”, now reads “trademarks that are directly connected with goods and/or services for which they are used”, i.e. “associatively connected” is now excluded from the provision.

The law prohibits the registration of a trademark identical or similar to an earlier trademark registered in the name of a third party. In its current version, the law also prohibits the registration of an identical trademark registered or applied-for in the name of the same party for the same goods and/or services. Thus, the same applicant is not allowed to register the same trademark twice.

The amended law also allows registration of a trademark similar to an earlier trademark, either registered or applied-for in the name of a third party, provided that a letter of consent is submitted to the Kazakh PTO.

An accelerated examination of a trademark application is now available after the six-month period from the filing date of the application passes.

Finally, all disputes connected with trademark registration or refusal (oppositions, office actions), as well as non-use cancellation actions should be first brought before the Board of Appeal, not the courts.